Eva’s Bridal Ltd. v. Halanick Enterprises, Inc., No. 07 C 1668, Slip Op. (N.D. Ill. May 19, 2010) (Darrrah, J.).
Judge Darrah granted in part defendants’ and denied plaintiffs’ summary judgment motions in this Lanham Act case over the use of the name "Eva’s Bridal." The Court granted defendants’ summary judgment as to plaintiffs’ trademark infringement claim because plaintiffs presented no evidence that they federally registered the "Eva’s Bridal" trademark.
Plaintiffs’ Lanham Act unfair competition and trademark dilution claims did not require a federally registered trademark. But because the mark was not registered, plaintiffs had the burden of proving ownership of the mark. Plaintiffs created at least a question of fact as to ownership with evidence that plaintiffs’ business was a continuation of the original use of the mark. And because the mark was based upon a first name and not a last name the mark was not necessarily descriptive. The Court, therefore, held there was a question of fact as to whether the mark was descriptive.
Defendants agreed that plaintiffs abandoned the mark by licensing it without maintaining any quality control. Plaintiffs, however, presented sufficient evidence of control to create a question of fact.
Defendants’ argument that plaintiffs had not shown a likelihood of confusion was not relevant to a dilution analysis. And defendants’ argument that the Eva’s Bridal mark was not famous failed because it was not developed. Defendants’ argument was a single sentence without elaboration or support.
There was also a question of fact as to defendants’ laches and acquiescence claims. Plaintiffs cited evidence that during the alleged delay the parties engaged in various negotiations and defendants made various payments.
Finally, the Court denied plaintiffs’ summary judgment motion. Plaintiffs failed to comply with Local Rule 56.1(a)(3) requiring a statement of uncontested material facts supported by admissible evidence. Plaintiffs’ statements were largely taken verbatim from its amended complaint, were largely irrelevant to the summary judgment issues and were largely not supported by cites to the record. The Court, therefore, denied plaintiffs’ motion without analyzing it on the merits.